On February 21, 2012, Judge Perell of the Ontario Superior Court of Justice granted certification for a proposed class action suit under the Class Proceedings Act, 1992, S.O. 1992, c. C.6 against Thomson Reuters Canada Limited in Waldman v Thomson Reuters Corporation.
The suit was launched by Mr. Lorne Waldman, an Ontario lawyer specializing in immigration and refugee law, who alleged that Carswell (Thomson’s legal publishing branch) reproduced and published publicly filed court documents without the express permission or license of the authors of those works – including his own – on “Litigator” (a service provided on Carswell’s Westlaw). Mr. Waldman alleged that Carswell committed both primary and secondary copyright infringement, infringement of moral rights and filed for $50 million in compensation and $1 million in punitive damages on behalf of the class members.
The Litigator offers several products, including one that grants access to court files such as pleadings, notice of motions, affidavits and factums to its subscribers. Subscribers are not only granted access to the document bank (of roughly 100,000), they are also permitted to download, edit, print, and even allowed to incorporate portions of these documents into their own work. Although Carswell does not request permission from the authors to upload the documents, they apparently adhere to take-down requests made by the authors of those works.
Notably, many of the documents available on the Litigator service are also accessible through various resources such as the Supreme Court of Canada, Legal Aid and the Canadian Bar Association, and also provide disclaimers that caution users against copyright infringement. However, unlike the Litigator they are not for profit.
In general, Thomson argued that restricting access to the documents is “antithetical to the open court system and to access to justice, behaviour modification, and judicial economy, which are the rationales for class proceedings”. (para 3) Further, Thomson argued that the legal documents lack the level of skill and judgment necessary to be considered an original copyrightable work, and also stated that because the documents are authored by clients and lawyers, the suit would mandate a breach of client and attorney privilege, and make it unmanageable for the administration of justice.
The Court summarized Thomson’s position from their Statement of Defence filed on December 20, 2011, asserting:
“(a) the subscribers of Litigator are subject to terms and conditions that accord with the Copyright Act;
(b) it did not engage in copyright infringement;
(c) its conduct constituted “fair-dealing,” pursuant to s. 29 and s. 29.1 of the Act;
(d) it has the consent and/or an implied licence to copy and sell copies of court documents; and
(e) has a right supported by s.2(b) (freedom of expression) of the Charter of Rights and Freedoms, to copy and sell the works.” (para 48)
CCH Canadian Ltd v Law Society of Upper Canada was cited heavily throughout the discussions on originality, copyright infringement, and fair dealing. Interestingly, the Court specifically noted:
“Although arguably there may be distinguishing features, by way of analogy, the Great Library’s photocopy service is comparable to Litigator in that legal materials (literary works) authored by lawyers were reproduced by the users of the photocopying service (subscribers) or the legal materials were reproduced by library staff and delivered to the users, who, in turn could use the copies for their own purposes, including incorporating the information into court documents.” (para, 82)
However, the Court also ‘appreciated’ the differences between Thomson’s for profit, versus LSUC not for profit photocopying service.
In the end, the Court held that the threshold for certification is one of technicality and procedure, and as a result determined that the elements had been satisfied by Mr. Waldman. The Court also held that the allegations did merit further consideration in future proceedings.
For guidance on the issue, the Court approvingly cited “Copyright in Legal Documents” (1993) 31 Osgoode Hall L J 661, by David Vaver, Professor of Intellectual Property Law at Osgoode Hall Law School, stating that:
“The copyright in legal documents is not a settled matter. In his very interesting and informative article, Professor David Vaver identifies the uncertainties associated with copyright in legal documents. Professor Vaver’s article is not specifically about court documents but about legal documents generally, and he points out several public policy concerns that arise because the extent of copyright in legal documents, if any, would affect the ability of lawyers to serve other clients and would detract from the profession’s obligation to serve the public to the best of its ability, would promote needless variety when standardization and consistency in legal expression would be beneficial, and would monopolize legal services and suppress healthy competition. Professor Vaver suggests that it would be unethical and contrary to professional ethics for a lawyer to insist on copyright.” (para, 93)
In his article, Professor Vaver discusses the various issues surrounding the copyright eligibility of legal documents such as the bar for originality, ownership, moral rights, and infringement and concludes with various recommendations for both reform and guidelines for this genre of work. For example, he notes that one solution would be to not give copyright protection to legal documents at all, or that a perhaps another solution would be to “accept that some legal documents need protection in some circumstances”. (Vaver, 681)
As discussed in a previous IPilogue post written after the lawsuit was first launched in May 2010, the outcome of this decision at trial will have significant ramifications on the future digitization, as well as legal collegiality, and most importantly, on the interplay between users’ and creators’ rights.
Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.